Personal name must have trademark significance for protection under ACPA

Defendant Meadows thought that Plaintiff Salle owed him about $9,500. He was apparently having some trouble getting paid, so he registered the plaintiff’s personal name as a domain name – briansalle.com. He then tried to sell it to Salle for the amount of the purported debt. Being uninterested in the purchase, Salle filed a cybersquatting complaint against Meadows in federal court.

Salle asserted claims under both 15 U.S.C. §1125(d) and 15 U.S.C. §1129. Both parties moved for summary judgment. It was a mixed ruling, but largely a win for Salle.

The court addressed the §1129 claim first. That portion of the Lanham Act provides:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

Meadows argued that in trying to sell the domain name and thus recover money owed to him, he was not trying to profit, and therefore not liable under §1129. Despite some dispute over whether the debt was actually owed and to whom, the court ruled in Salle’s favor. “[C]yber-extortion is not a permissible way to recover a debt,” the court warned.

As for the §1125(d) claim, the court ruled in Meadows’s favor. Section 1125(d) provides, among other things, that a person shall be liable to the “owner of a mark, including a personal name which is protected as a mark under [§1125]” if that person has a bad faith intent to profit from that mark.

Salle argued that §1125 provides that all personal names are subject to trademark protection. Meadows, on the other hand, argued that a personal name must have some sort of trademark significance, e.g., acquired distinctiveness, in order to fall with the protection of §1125. Agreeing with Meadows’s interpretation of the section, the court found that Salle failed to present enough evidence to survive summary judgment on the question of whether he had protectible trademark rights in his personal name.

Evan Brown is an attorney in Chicago helping clients identify and manage issues concerning technology development, copyright, trademarks, domain names, software licensing, service agreements and other matters involving the internet and new media.

Evan is a partner in the law firm of Much Shelist, P.C. He is an adjunct professor of law at Chicago-Kent College of Law, and is a Domain Name Panelist with the World Intellectual Property Organization (WIPO).